A registered trademark’s overriding purpose is to protect your company’s most valuable asset – your brand. We start this week with a David v Goliath trade mark tale. Australians fondly refer to Target as “Tar-Jay.” In 2013, ‘Catch of the Day’ applied to register the logo ‘Tar-Jay by Mumgo.com.au”, directly conflicting with Target’s recent announcement to embrace and integrate “Tar-Jay” into their marketing strategy.
Unsurprisingly, the retail giant opposed this application alleging misleading and deceptive conduct. It is evident why Target’s moniker when used in association with another brand can confuse consumers. Below, we set out why the trade mark was rejected and key takeaways for businesses seeking to register a parody trade mark.
Why Was the Trade Mark Rejected?
‘Catch of the Day’s’ trade mark application was rejected because it would likely confuse consumers. If a consumer were on their website and saw the mark “Tar-Jay,” it is reasonable to conclude that a visitor would assume there was an affiliation with Target or that the site was operating under the retailer’s umbrella via a license agreement, or as a direct subsidiary.
What Can Other Businesses Learn From “Catch of the Day”?
In this instance, the parody trade mark “Tar-Jay” could have misled the general public. However, there is a fine line between a misleading parody, and one a consumer could easily identify as a parody. If you intend to parody another brand or use a nickname or moniker that references or alludes to another business, a general rule of thumb is that originality works best. Under Australia’s Trade Marks Act 1995 (Cth), parody is not a defense to trade mark infringement. A mark cannot deceive or confuse consumers as to the source of the mark. A trade mark will infringe on a registered mark if there are elements that mislead and deceive others.
So, is this a Unique Tale?
There are several success stories of businesses defending their parody trade marks. In the USA, “Snaks Fifth Avenchew”, a canine treat brand, parodied “Saks Fifth Avenue”. Saks sent a cease and desist letter, however, Snacks defended their claim. Canine parodies of high-fashion labels are a common theme in the USA with Chewy Vuiton and Tommy Holedigger also successfully defending claims brought by Louis Vuitton and Tommy Hilfiger.
If your business’ name is a parody, take steps to confirm that you are not deceiving the public by suggesting an affiliation to the original brand. Also, be prepared that the original brand or registered trade mark owner may challenge your application, so it’s important that you know your rights.
If you have questions about your parody business name, or need to register your trade mark, let our trade mark lawyers know on 1300 544 755.
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